Trademarks 101
My favorite part of being a business lawyer is helping people create and protect something that matters to them. As a business owner myself, I understand the long hours, endless overthinking, and significant investment my clients pour into building their businesses.
My least favorite part? Seeing people lose what they’ve built because they didn’t have the right legal protections in place from the start.
Consider a local business that’s built a strong reputation under a catchy name. The owner finally has the funds to take the product national, only to discover that someone else has already trademarked a similar name for a similar product sold across the country. Now she’s facing a costly rebrand and risks losing the regional reputation and customer base she spent years building.
Or take a content creator who’s used the same logo online for years but never trademarked it. She’s ready to form a business entity and protect the logo her followers recognize, only to discover someone else has been using it without her knowledge. Even if the copycat hasn’t registered the mark, the creator is now under pressure to rush the trademark process and hope the copycat hasn’t acquired limited common law rights, all so she can stop the infringement and secure her brand.
Trademarking early can help businesses avoid these scenarios and the legal headaches and expensive rebrands that come with them. In addition, small and medium-size businesses that trademark and proactively protect their IP have been shown to grow more quickly.
What is a trademark?
A trademark protects the words and designs (called “marks”) that distinguish your brand from others. Think of it as a wall around your brand’s identity: it prevents others from copying, confusing, or diluting what you built.
You can obtain trademark rights by registering your mark at the federal level with the United States Patent and Trademark Office (USPTO) or directly with states. You may also be able to acquire a very limited set of common law rights to a mark through use. A federal trademark is the gold standard and provides the most significant protections by giving you the right to use your mark across the country.
What can you trademark?
You can trademark anything used to identify your goods or services in the marketplace can be trademarked, including:
your business name;
your logo;
your slogan;
your product packaging; and
sounds or colors associated with your brand.
What are the benefits of a trademark?
A federally registered trademark gives you:
exclusive rights to use your mark within your industry;
legal ownership of your brand;
the ability to stop copycats or brands from confusing your consumers;
greater credibility with customers, collaborators, and investors;
a valuable intangible business asset; and
a firm foundation for growth.
What makes a trademark strong?
A strong mark is one that has a high chance of being registered by the USPTO and provides the broadest possible protections. Strong marks must be (1) distinct and (2) not conflict with similar marks that are used in connection with goods or services similar to yours.
Distinctiveness
Marks fall on a spectrum of distinctiveness. The more distinct your mark is, the easier it will be to register with the USPTO. Marks range from:
Generic (describes the product itself)
Descriptive (describes features of the product)
Suggestive (hints at features of the product)
Arbitrary (uses words in a new way)
Fanciful (uses made-up words)
The further your mark is from generic, the more likely it will be registered with the USPTO.
Similarity
The USPTO’s primary concern is whether your mark is likely to be confused with a similar mark in your industry. When you apply for a trademark, the USPTO assesses whether your mark is confusingly similar to another registered mark. The examiner considers:
how your mark sounds (phonetic, play on words, etc.)
how it looks (spelling, design elements, etc.)
any meaning your mark has (foreign languages included)
the commercial impression (what the average consumer thinks)
The examiner also considers the types of goods or services you sell in connection with the mark.
Even if your mark isn’t an exact match to an existing mark, the examiner may refuse to register it if your mark might be confusing to the average consumer.
How do you register a trademark?
Registering a mark with the USPTO is a lengthy process, sometimes taking 12-18 months from filing to registration. The general process follows these steps:
Brand & Audit Strategy — determine what mark you want to register
Search — conduct a comprehensive search to determine if there is an existing conflicting mark at the federal or state level and identify any mark that may have common law rights.
Application — prepare your application to the USPTO
USPTO Review — the USPTO will assign your application to an examiner. If the examiner identifies any issues, they will issue an Office Action that you must respond to.
Publication & Opposition — once approved by the USPTO, your mark will be published in the Official Gazette for 30 days. During this time, anyone who considers your mark to be a conflict with theirs can oppose your registration.
Registration & Maintenance — trademarks require periodic filings after registration to keep them live.
Are you ready to trademark?
Whether you’re just launching or scaling, it’s never the wrong time to take steps to protect your intellectual property.
Grab my free guide to trademarks here to learn more about the trademark process and help you assess whether you’re ready to trademark.
I offer flat-fee trademark services to help you maximize your protections without surprise legal fees. If you’re ready to chat about protecting what you’ve built, reach out to me here.